Case 1:21-cv-00293-MJT Document 1 Filed 06/10/21 Page 1 of 10 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
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`OPTINETIX INC.,
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`v.
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`WALGREEN CO.,
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`Plaintiff,
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`Defendants.
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` Case No. ___________________
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`DEMAND FOR JURY TRIAL
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`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
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`1.
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`Optinetix Inc. (“Optinetix” or “Plaintiff”), by and through its counsel, hereby
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`brings this action for patent infringement against Walgreen Co. (“Walgreens”) (“Walgreens” or
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`“Defendant”), alleging infringement of the following validly issued patent (the “Patent-in-Suit”):
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`U.S. Patent No. 7,349,668 titled “Systems and methods for embedding commercial information
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`into broadcast media” (the ’668 Patent) attached hereto as Exhibit A.
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`NATURE OF THE ACTION
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`2.
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`This is an action for patent infringement arising under the United States Patent
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`Act 35 U.S.C. §§ 1 et seq., including 35 U.S.C. § 271.
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`PARTIES
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`3.
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`Plaintiff, Optinetix Inc., is a company established in Israel with its principal place
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`of business at 12 Eliyahu Hakim St., Tel-Aviv 69120, Israel.
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`4.
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`Upon information and belief, Defendant Walgreen Co. is an Illinois corporation
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`with a regular and established place of business at 2300 E Park Blvd, Plano, TX 75074. Walgreen
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`Co. may be served via its registered agent Prentice Hall Corporation System at 211 E. 7th Street,
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`COMPLAINT FOR PATENT INFRINGEMENT AND DEMAND FOR JURY TRIAL
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`Case 1:21-cv-00293-MJT Document 1 Filed 06/10/21 Page 2 of 10 PageID #: 2
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`Suite 620, Austin, TX 78701.
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`JURISDICTION AND VENUE
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`5.
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`This lawsuit is a civil action for patent infringement arising under the patent laws
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`of the United States, 35 U.S.C. § 101 et seq. The Court has subject-matter jurisdiction pursuant to
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`28 U.S.C. §§ 1331, 1332, 1338(a), and 1367.
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`6.
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`The Court has personal jurisdiction over Defendant for the following reasons: (1)
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`Defendant is present within or has minimum contacts within the State of Texas and the Eastern
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`District of Texas; (2) Defendant has purposefully availed itself of the privileges of conducting
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`business in the State of Texas and in this district; (3) Defendant has sought protection and benefit
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`from the laws of the State of Texas; (4) Defendant regularly conducts business within the State of
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`Texas and within this district, and Plaintiff’s cause of action arises directly from Defendant’s
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`business contacts and other activities in the State of Texas and in this district; and (5) Defendant
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`has purposely availed itself of the privileges and benefits of the laws of the State of Texas.
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`7.
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`Defendant, directly and/or through intermediaries, ships, distributes, uses, offers
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`for sale, sells, and/or advertises products and services in the United States, the State of Texas, and
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`the Eastern District of Texas including but not limited to the products which contain the
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`infringing ’668 Patent systems and methods as detailed below. Upon information and belief,
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`Defendant has committed patent infringement in the State of Texas and in this district; Defendant
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`solicits and has solicited customers in the State of Texas and in this district; and Defendant has
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`paying customers who are residents of the State of Texas and this district and who each use and
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`have used the Defendant’s products and services in the State of Texas and in this district.
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`8.
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`Defendant has regular and established places of business in this district, has
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`transacted business in this district, and has directly and/or indirectly committed acts of patent
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`Case 1:21-cv-00293-MJT Document 1 Filed 06/10/21 Page 3 of 10 PageID #: 3
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`infringement in this district.
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`PATENT-IN-SUIT
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`Plaintiff incorporates the above paragraphs herein by reference.
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`On March 25, 2008, United States Patent No. 7,349,668 titled “Systems and
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`9.
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`10.
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`methods for embedding commercial information into broadcast media” was duly and legally
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`issued by the United States Patent and Trademark Office. The ’668 Patent is presumed valid and
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`enforceable.
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`11.
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`Plaintiff is the assignee of all right, title and interest in the ’668 patent, including
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`all rights to enforce and prosecute actions for infringement and to collect damages for all relevant
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`times against infringers of the ’668 Patent.
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`12.
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`The ’668 Patent relates to the distribution of information, typically digital
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`information that is distributed through broadcast media such as television and radio, displays
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`such as signage, etc. (See Ex. A at 1:20-23.).
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`13.
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`The inventions disclosed in the Patent-in-Suit were not well-understood, routine,
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`or conventional. At the time the ’668 Patent was filed, coupons were an ultimately inefficient
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`method of engaging consumers. Most coupons were printed on paper, and the printing costs
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`associated with them were expensive. Moreover, their success rate, namely the total distribution
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`compared to actual redemption, was low. (See Ex. A at 1:38-41.). Computer distributed coupons
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`represented a cheaper alternative to paper coupons, simply avoiding printing and mailing costs
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`altogether. However, at that time, computer access was far from a certainty for the average
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`consumer. Furthermore, some consumers with computer access found it difficult to use the
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`Internet or to print, thereby adding further obstacles to redeeming computer coupons. (See Ex. A
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`at 1:44-51.). Both paper and computer distributed coupons also could not offer effective
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`opportunities for impulse buying, ultimately an important facet of sales. (See Ex. A at 1:52-53.).
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`14.
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`The Patent-in-Suit addressed these technical challenges by, for example, teaching
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`how mobile communication devices and broadcast media may be utilized together to distribute
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`information in the form of coupons or the like. (See Ex. A at 2:19-22).
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`15.
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`The claims of the ’668 Patent do not merely recite the performance of a familiar
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`business practice with a requirement to perform it on the Internet. Instead, the claims recite one
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`or more inventive concepts that are rooted in improving the efficiency of coupon distribution via
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`mobile communication devices and broadcast media.
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`16. Moreover, the inventions taught in the ’668 Patent, which are rooted in improving
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`the efficiency of coupon distribution via mobile communication devices and broadcast media,
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`cannot be performed with pen and paper or in the human mind. Additionally, because the ’668
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`Patent teaches a mechanism to improve the efficiency of coupon distribution via mobile
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`communication devices and broadcast media, the solutions it teaches are not merely drawn to
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`longstanding human activities.
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`ACCUSED PRODUCTS
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`17.
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`Defendant makes, uses, offers for sale and sells in the U.S. products, systems,
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`and/or services that infringe the Patent-in-Suit, including, but not limited to the Walgreens
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`mobile apps for iOS and Android (the “Accused Products” or “Accused Instrumentality”). The
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`Accused Instrumentality is a mobile application for selling products, including but not limited to
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`food products and groceries. Defendant provides and distributes digital coupons for its registered
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`users via the mobile application.
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`COUNT I
`(Infringement of U.S. Patent No. 7,349,668)
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`Plaintiff incorporates the above paragraphs herein by reference.
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`The ’668 Patent is valid, enforceable, and was duly and legally issued by the United
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`18.
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`19.
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`States Patent and Trademark Office (“USPTO”) on March 25, 2008. The ’668 Patent is presumed
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`valid and enforceable. See 35 U.S.C. § 282.
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`20.
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`Plaintiff is the owner by assignment of the ’668 patent and possesses all rights of
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`recovery under the ’668 patent, including the exclusive right enforce the ’668 patent and pursue
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`lawsuits against infringers.
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`21. Without a license or permission from Plaintiff, Defendant has infringed and
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`continues to directly and indirectly infringe on one or more claims of the ’668 Patent by importing,
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`making, using, offering for sale, or selling products and devices that embody the patented
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`inventions, including, without limitation, one or more of the patented ’668 systems and methods,
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`in violation of 35 U.S.C. § 271.
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`Direct Infringement – 35 U.S.C. § 271(a)
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`22.
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`Plaintiff incorporates the above paragraphs herein by reference, the same as if set
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`forth herein.
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`23. Without a license or permission from Plaintiff, Defendant has infringed and
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`continues to directly infringe on one or more claims of the ’668 Patent by importing, making,
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`using, offering for sale, or selling products and devices that embody the patented inventions,
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`including, without limitation, one or more of the patented ’668 systems and methods, in violation
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`of 35 U.S.C. § 271.
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`24. Defendant has been and now is directly infringing by, among other things,
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`practicing all of the steps of the ’668 Patent, for example, internal testing, quality assurance,
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`research and development, and troubleshooting. See, e.g., Waymark Corp. v. Porta Sys. Corp., 245 F.3d
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`1364, 1366 (Fed. Cir. 2001) (noting that “testing is a use of the invention that may infringe under §
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`271(a)”).
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`25.
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`By way of example, Defendant has infringed and continues to infringe at least one
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`or more claims of the ’668 Patent, including at least Claim 1. Attached hereto as Exhibit B is an
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`exemplary claim chart detailing representative infringement of Claim 1 of the ’668 Patent.
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`Induced Infringement – 35 U.S.C. § 271(b)
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`26.
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`Plaintiff incorporates the above paragraphs herein by reference, the same as if set
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`forth herein.
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`27. Defendant has been and now is indirectly infringing by way of inducing
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`infringement by others and/or contributing to the infringement by others of the ’668 Patent in the
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`State of Texas, in this judicial District, and elsewhere in the United States, by, among other things,
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`making, using, offering for sale, and/or selling, without license or authority, products
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`incorporating the accused technology. End users include, for example, Defendant’s customers and
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`other third parties interacting with the accused technology.
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`28. Defendant had pre-suit knowledge of the Patents-in-Suit as early as March 24,
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`2021 when it received a letter from Plaintiff notifying Defendant of Defendant’s infringement.
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`Defendant had post-suit knowledge when this suit was filed. EON Corp. IP Holdings, LLC v. Sensus
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`USA, Inc., No. C-12-1011 EMC, 2012 WL 4514138, at *1 (N.D. Cal. 2012) (citing In re Bill of Lading
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`Transmission and Processing System Patent Litigation, 681 F.3d 1323, 1345 (Fed.Cir.2012)) (noting that
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`the Federal Circuit has determined that post-filing knowledge is sufficient to meet the knowledge
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`requirement for indirect infringement).
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`29. Defendant knew the Accused Product infringes the ’668 Patent and yet Defendant
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`induced and continues to induce others-including partners, customers, and third parties-to
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`directly infringe at least one claim of the ’668 Patent under 35 U.S.C. § 271(b). Defendant took
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`active steps to induce infringement, such as advertising an infringing use, which supports a
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`finding of an intention. See Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 932 (2005)
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`("[I]t may be presumed from distribution of an article in commerce that the distributor intended
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`the article to be used to infringe another's patent, and so may justly be held liable for that
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`infringement").
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`30.
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`For example, Defendant induces its users to use the infringing Accused Product on
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`their mobile devices, actively prompting infringement by directing its customers to find and
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`redeem digital coupons online and in-store by using the Walgreens apps. See, e.g., Ex. C1
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`(instructing customers to use the Paperless Coupons feature of the Walgreens app to clip digital
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`coupons and use a barcode to redeem digital coupons at checkout); Ex. D2 (instructing customers
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`how to redeem coupons via a scannable barcode at checkout) and Ex. E3 (instructing customers
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`how to redeem digital coupons in-store and online).
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`31.
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`The allegations herein support a finding that Defendant induced infringement of
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`the ’668 Patent. See Power Integrations v. Fairchild Semiconductor, 843 F.3d 1315, 1335 (Fed. Cir. 2016)
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`(“[W]e have affirmed induced infringement verdicts based on circumstantial evidence of
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`inducement [e.g., advertisements, user manuals] directed to a class of direct infringers [e.g.,
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`customers, end users] without requiring hard proof that any individual third-party direct
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`1 https://www.walgreens.com/topic/help/shophelp/coupons_help.jsp
`2 https://www.walgreens.com/topic/help/generalhelp/coupon_policy_main.jsp?_requestid=37856
`3 https://play.google.com/store/apps/details?id=com.usablenet.mobile.walgreen
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`infringer was actually persuaded to infringe by that material.”).
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`Contributory Infringement – 35 U.S.C. § 271(c)
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`32.
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`Plaintiff incorporates the above paragraphs herein by reference, the same as if set
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`forth herein.
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`33.
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`Defendant had pre-suit knowledge of the Patents-in-Suit as early as March 24,
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`2021 when it received a letter from Plaintiff notifying Defendant of Defendant’s infringement.
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`Defendant had post-suit knowledge when this suit was filed. EON Corp. IP Holdings, LLC v. Sensus
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`USA, Inc., No. C-12-1011 EMC, 2012 WL 4514138, at *1 (N.D. Cal. 2012) (citing In re Bill of Lading
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`Transmission and Processing System Patent Litigation, 681 F.3d 1323, 1345 (Fed.Cir.2012)) (noting that
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`the Federal Circuit has determined that post-filing knowledge is sufficient to meet the knowledge
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`requirement for indirect infringement).
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`34. On
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`information and belief, Defendant’s
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`implementation of the accused
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`functionality has no substantial non-infringing uses. See, e.g., Lucent Techs., Inc. v. Gateway, Inc., 580
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`F.3d 1301, 1321 (Fed. Cir. 2009) (holding that the “substantial non-infringing use” element of a
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`contributory infringement claim applies to an infringing feature or component, and that an
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`“infringing feature” of a product does not escape liability simply because the product as a whole
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`has other non-infringing uses). The Accused Product does not allow one to disable the infringing
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`technology when used.
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`Willful Infringement
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`35.
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`Plaintiff incorporates the above paragraphs herein by reference, the same as if set
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`forth herein.
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`36. Defendant had pre-suit knowledge of the Patents-in-Suit as early as March 24,
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`2021 when it received a letter from Plaintiff notifying Defendant of Defendant’s infringement.
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`Defendant had post-suit knowledge when this suit was filed. EON Corp. IP Holdings, LLC v. Sensus
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`USA, Inc., No. C-12-1011 EMC, 2012 WL 4514138, at *1 (N.D. Cal. 2012) (citing In re Bill of Lading
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`Transmission and Processing System Patent Litigation, 681 F.3d 1323, 1345 (Fed.Cir.2012))
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`(noting that the Federal Circuit has determined that post-filing knowledge is sufficient to meet
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`the knowledge requirement for indirect infringement).
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`37.
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`Despite its knowledge of the ’668 Patent, Defendant has sold the Accused Product
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`in egregious disregard of Plaintiff’s patent rights. Defendant has acted recklessly and engaged in
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`willful, wanton, and deliberately acts of infringement of the ’668 Patent, justifying an award to
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`Plaintiff of increased damages under 35 U.S.C. § 284, and attorneys’ fees and costs incurred under
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`35 U.S.C. § 285.
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`Plaintiff Suffered Damages
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`38. Defendant’s infringement of the ’668 Patent has caused damage to Plaintiff, and
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`Plaintiff is entitled to recover from Defendant the damages sustained as a result of Defendant’s
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`wrongful acts in an amount subject to proof at trial pursuant to 35 U.S.C. § 271. Defendant’s
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`infringement of Plaintiff’s exclusive rights under the ’668 Patent will continue to damage Plaintiff
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`causing it irreparable harm for which there is no adequate remedy at law, warranting an
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`injunction from the Court.
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`REQUEST FOR RELIEF
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`39.
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`Plaintiff incorporates each of the allegations in the paragraphs above and
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`respectfully asks the Court to:
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`(a)
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`enter a judgment that Defendant has directly infringed, contributorily infringed,
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`and/or induced infringement of one or more claims of each of the ’668 Patent;
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`(b)
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`enter a judgment awarding Plaintiff all damages adequate to compensate it for
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`Defendant’s infringement of, direct or contributory, or inducement to infringe, the
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`including all pre-judgment and post-judgment interest at the maximum rate permitted by
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`law;
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`(c)
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`enter a judgment awarding treble damages pursuant to 35 U.S.C. § 284 for
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`Defendant’s willful infringement of the ’668 Patent;
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`(d)
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`issue a preliminary injunction and thereafter a permanent injunction enjoining and
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`restraining Defendant, its directors, officers, agents, servants, employees, and those acting
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`in privity or in concert with them, and their subsidiaries, divisions, successors, and
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`assigns, from further acts of infringement, contributory infringement, or inducement of
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`infringement of the ’668 Patent;
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`(e)
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`enter a judgment requiring Defendant to pay the costs of this action, including all
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`disbursements, and attorneys’ fees as provided by 35 U.S.C. § 285, together with
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`prejudgment interest; and
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`(f)
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`award Plaintiff all other relief that the Court may deem just and proper.
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`Dated: June 10, 2021
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`Respectfully submitted,
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`By: /s/ Kirk J. Anderson
`KIRK. J. ANDERSON (CA SBN 289043)
`kanderson@budolaw.com
`BUDO LAW P.C.
`5610 Ward Rd., Suite #300
`Arvada, CO 80002
`(720) 225-9440 (Phone)
`(720) 225-9331 (Fax)
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`Attorneys for Plaintiff Optinetix Inc.
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`COMPLAINT FOR PATENT INFRINGEMENT AND DEMAND FOR JURY TRIAL
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